richmond v. jiawei technology

8/12/2019 Richmond v. Jiawei Technology

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Lawrence C. Hersh Of CounselAttorney at Law Theodore F. Shiells

17 Sylvan Street Texas State Bar No. 00796087

Suite 102B Shiells Law Firm P.C.Rutherford, New Jersey 07070 1201 Main StreetSuite 2470

Tel: (201) 507-6300 Dallas, Texas 75202Fax: (201) 507-6311 Tel: (214) 979-7312

[email protected] Fax: (214) [email protected]

Attorneys for Plaintiff Simon Nicholas Richmond

IN THE UNITED STATES DISTRICT COURT

FOR DISTRICT OF NEW JERSEY

_______________________________________________

SIMON NICHOLAS RICHMOND, ))

Plaintiff, ))

v. ) Civil Action No.

) _______

JIAWEI TECHNOLOGY (USA), LTD. ) MLC-DEA)

Defendant. )______________________________________________ )

SEVERED FIRST AMENDED COMPLAINT AND JURY DEMAND


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SEVERED FIRST AMENDED COMPLAINT AND JURY DEMAND

Plaintiff Simon Nicholas Richmond (Richmond or Plaintiff), for his

claims against Defendant Jiawei Technology (USA), Ltd., (Jiawei USAor

Defendant) makes and files this Complaint and alleges as follows:

1. STATEMENT OF RELATED CASES AND PRIOR PROCEEDINGS

This case is related to Simon Nicholas Richmond v. Jiawei North America

Inc., et al., 13-cv-1952 and 1953 (MLC-DEA), and alleges infringement of the

same United States Patents that are at issue in the aforementioned case, i.e., United

States Patent Nos. 7,196,477; 7,429,827; 8,362,700; and, 8,089,370. This case is

further related to case docket nos. 13-cv-1944 (MLC-DEA), 13-cv-1949 (MLC-

DEA), 13-cv-1950 (MLC-DEA), 13-cv-1951 (MLC-DEA), 13-cv-1952 (MLC-



DEA), all of which have been consolidated with Simon Nicholas Richmond v.

Lumisol, et al., 13-cv-1944 (MLC-DEA).

The allegations contained in this Complaint against Defendant were

originally filed in Simon Nicholas Richmond v. Jiawei North America Inc., et al.,

13-cv-1952 and 1953 (MLC-DEA). In an Order dated July 3, 2014, the claims


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against Defendant Jiawei USA were severed, and Plaintiff was ordered to file a

severed complaint against each individual defendant in Case No. 13-cv-1952 and

1953(MLC-DEA) by August 1, 2014. (Case No. 13-cv-1944, Dkt. 122, p.10).

2. THE PARTIES

A. Plaintiff Richmond.

1. Plaintiff Richmond is an individual and a resident of New Jersey.

B. Defendant.

2. Jiawei Technology (USA), Ltd. (Jiawei USA) is a corporation

organized and existing under the laws of the State of Delaware, having a principal

place of business at 2373 Lincoln Ave., Hayward, California 94545. Jiawei USA

may be served through its agent for service of process at The Corporation Trust

Company, Corporation Trust Center, 1029 Orange St., Wilmington, DE 19801.

3. Service of the prior Original and First Amended Complaints in 13-cv-

1952 and 1953 (MLC-DEA) was previously properly effectuated on Defendant.

3. SUBJECT MATTER JURISDICTION

4. This is an action for patent infringement arising under the patent laws

of the United States, Title 35, United States Code, including 35 U.S.C. 271 and

281-285. This Court has subject matter jurisdiction pursuant to 28 U.S.C. 1331


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and 1338(a).

4. PERSONAL JURISDICTION AND VENUE

A. General.

5. Personal jurisdiction over Defendant is proper pursuant to New Jersey

Long-Arm Statute, N.J. CT. R. 4:4-4 and principles of due process.

6. Jiawei USA has sufficient minimum contacts with New Jersey and

this district and the maintenance of this suit does not offend traditional notions of

fair play and substantial justice.

B. Specific Jurisdiction.

7. Personal jurisdiction over Defendant is proper under principles of

specific jurisdiction.

8. Upon information and belief, Defendant has transacted and solicited

business in New Jersey and in this district related to the subject matter of the

claims alleged herein and, upon information and belief, has committed direct

infringement in this state and district by importing, offering to sell and/or selling

goods infringing one or more of the Patents-in-Suit, to customer(s) in this state.

9.

Upon information and belief, Defendant has knowingly induced

infringement in New Jersey by its customer(s) by offering to sell and/or selling


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goods that infringe one or more of the Patents-in-Suit (as detailed in the Counts

below) to customer(s) in New Jersey, with specific knowledge of Plaintiffs

applicable patent(s), and with a specific intent and/or willful blindness to the fact

that their infringing products will be imported into and offered for sale, sold and/or

used inNew Jersey by Defendants customers.

10. The infringement by Defendant that is the subject of the claims

alleged has caused Plaintiff to suffer damages and other losses in New Jersey and

this district, a result that was reasonably foreseeable to Defendant at the time

Defendant committed its misconduct.

C. General Jurisdiction.

11. Personal jurisdiction over Defendant is also proper under principles of

general jurisdiction in that Defendant either resides in this state and district and/or

has regularly and purposefully conducted business in New Jersey and this district.

D. Venue.

12. Venue also properly lies in this district pursuant to 28 U.S.C.

1400(b) because Defendant has committed acts of infringement in this district.

13.

Venue also properly lies in this district under 28 U.S.C. 1391(b)(2)

and/or (3) because, upon information and belief, either a substantial part of the


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events or omissions giving rise to the claims recited below occurred in this district,

or a substantial part of the property that is the subject of the action is in this

district, or because there is no district in which the action may otherwise be

brought as provided in 28 U.S.C. 1391, and this court has personal jurisdiction

over Defendant.

5. FACTUAL BACKGROUND

A. Plaintiffs Patents-in-Suit

14. For many years, Richmond has engaged in the development,

manufacture, and sale of solar-powered garden lighting. Richmond has taken steps

to protect his innovative inventions and designs. In particular, Richmond owns

United States utility and design patents relating to his solar-powered garden lights.

15. Richmond is the inventor and owner of all right, title, and interest to

the United States patent number 7,196,477 A1, entitled Solar Powered Light

Assembly to Produce Light of Varying Colors,(477 Color-Changing Patent),

which duly and legally issued to Richmond on 3/27/2007.



Assembly to Produce Light of Varying Colors, (827 Color-Changing Patent),


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Assembly to Produce Light of Varying Colors,(700 Color-Changing Patent),



the United States patent number 8,089,370 A1, entitled Illuminated Wind

Indicator,(370 Framed Patent), which duly and legally issued to Richmond on

1/3/2012.

19. Plaintiffs 477 Patent is valid and enforceable.




23. On November 3, 2011, United States Patent Publication No. US

2011/0266953 A1 (the 953 Published Application) was published. A copy of

the 953 Published Application may be obtained for free from the official United

States Patent and Trademark website, uspto.gov. The invention as claimed in the

700 Patent is substantially identical to the invention as claimed in the 953


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Published Application.

24. On November 3, 2009, United States Patent Publication No. US

2009/0322495 A1 (the 495 Published Framed Application) was published. A

copy of the 495 Published Framed Application may be obtained for free from the

official United States Patent and Trademark website, uspto.gov. The invention as

claimed in the 370Patent is substantially identical to the invention as claimed in

the 495 Published Application.

25. On March 26, 2009, United States Patent Publication No. US

2009/0078604 A1 (the 604 Published Application) was published. A copy of

the 604 Published Application may be obtained for free from the official United

States Patent and Trademark website, uspto.gov. The invention as claimed in the

914 Try-Me Patent is substantially identical to the invention as claimed in the

604 Published Application.

26. Richmond continues to engage in the development and sale of solar-

powered garden lighting and continues to take steps to protect his innovative

inventions and designs and in this regard has applied for additional patent

protection for his inventions. For example, on March 29, 2012, United States

Patent Publication No. US 2012/0075104 A1 (the 104 Published Application)


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was published, and on April 5, 2012, United States Patent Publication No. US

2012/0081888 A1 (the 888 Published Application) was published. Copies of

the 104 and 888 Published Applications may be obtained for free from the

official United States Patent and Trademark website, uspto.gov.

27. At all times relevant to this action, Richmond has complied with any

notice provisions of 35 U.S.C. 287 as they may relate to the Patents-in-Suit.

B. Facts relevant to Defendant

28. Defendant has imported, sold, exposed for sale or offered for sale

accused solar lighting products supplied by vendors other than the named

defendants in the cases consolidated under Case No. 13-cv-1944 (D.N.J.).

29. Since issuance of one or more of the foregoing Richmond patents,

Defendant has or has been importing, exposing for sale, offering for sale, or selling

the following products:

a) C52-S1A-CB-T6 Color changing solar crackle glass sphere

b) CS1

c) Hanging Teardrop Color Changing Solar LED Light 2/Pk

d)

Jiawei Solar MPO001-R1A-AA-1 Solar Decorative Light Stake

e) Portfolio Solar Hummingbird Yard Light Item # 0278602


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Model # LW042001-052012, Ace No. 8332611

f) Yards and Beyond Model OA1Pa-S1-BK-2

30.

In addition to the products identified in the preceding paragraph,

Defendant has or has been importing, exposing for sale, offering for sale, and

selling the solar lighting products identified in Exhibit A.

6. INFRINGEMENT OF PLAINTIFFS PATENTS

Count 1Jiawei USAs Direct Infringement of 477 Patent

31. The allegations of Paragraphs 1-30 are incorporated by reference as if

fully set forth again herein.

32. Jiawei USA has notice of Plaintiffs rights in the 477 Patent.

33. Upon information and belief, Jiawei USA directly infringes, and has

infringed, Plaintiffs 477 Color-Changing Patent by, at-least, importing, exposing

for sale, offering to sell, and selling one or more solar-powered garden light

products that infringe 477 Patent.

34. The attached Preliminary Product List - Jiawei USA, attached as

Exhibit A, contains a non-comprehensive list of products that, upon information

and belief, are believed to constitute infringement of Richmonds patents, where a

Y under the column labeled 477 Patent indicates that the product identified in


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Model # LW042001-052012, Ace No. 8332611

d) C52-S1A-CB-T6 Color changing solar crackle glass sphere.

39.

The attached Preliminary Product List - Jiawei USA, attached as




the corresponding row is believed to be an infringement of Plaintiffs 827 Color-

Changing Patent.

40. Upon information and belief, Jiawei USA has and is importing,

exposing for sale, offering to sell, and selling other solar-powered garden light

products which infringe Plaintiffs 827 Color-Changing Patent and will continue

to do so unless restrained by this Court.





43.

Upon information and belief, Jiawei USA directly infringes, and has

infringed, Plaintiffs 700 Color-Changing Patent by, at-least, importing, exposing


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for sale, offering to sell, and selling one or more solar-powered garden light

products that infringe the 700 Patent. Upon information and belief, those solar-

powered garden lights include, at least, the following products:

a) Jiawei Solar MPO001-R1A-AA-1 Solar Decorative Light Stake

b) CS1

c) Yards and Beyond Model OA1Pa-S1-BK-2

d) Hanging Teardrop Color Changing Solar LED Light 2/Pk

e) Portfolio Solar Hummingbird Yard Light Item # 0278602

Model # LW042001-052012, Ace No. 8332611

f) C52-S1A-CB-T6 Color changing solar crackle glass sphere.




Y under the column labeled indicates that the product identified in the

corresponding row is believed to be an infringement of Plaintiffs700 Color-

Changing Patent.

45.

Upon information and belief, Jiawei USA has and is importing,



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products which infringe Plaintiffs 700 Color-Changing Patent and will continue

to do so unless restrained by this Court.





48. Upon information and belief, Jiawei USA directly infringes, and has

infringed, Plaintiffs 370 Framed Patentby, at-least, importing, exposing for sale,

offering to sell, and selling one or more solar-powered garden light products that

infringe the 370 Patent. Upon information and belief, those solar-powered garden

lights include, at least, the following products:

a) Jiawei Solar MPO001-R1A-AA-1 Solar Decorative Light Stake

b) CS1

c) Jiawei Solar MPO001-R1A-AA-1 Solar Decorative Light

Stake.





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the corresponding row is believed to be an infringement of Plaintiffs370 Framed

Patent.

50. Upon information and belief, Jiawei USA has and is importing,


products which infringe Plaintiffs 370 Framed Patentand will continue to do so

unless restrained by this Court.

Count 5Jiawei USAs Inducement of CVS Pharmacy, Inc., ACE Hardware

Corp., Home Depot USA, Inc., and, Lowes Home Center, Inc.s Infringement

51.

The allegations of Paragraphs 1-50 are incorporated by reference as if


52.

Upon information and belief, Jiawei USA has had actual knowledge

of Plaintiffs 7,196,477; 7,429,827; 8,362,700; and, 8,089,370 Patents, and

knowledge that its solar-powered garden lights as accused of infringement earlier

in this Complaint (Accused Infringing Products) would infringe Plaintiffs

7,196,477; 7,429,827; 8,362,700; and, 8,089,370 Patents if imported into, offered

for sale or sold in the United States. Jiawei USA has had such knowledge of

Plaintiffs Patents, as alleged in this Complaint and no later than on or about , by


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means of service of the First Amended Complaint on Jiawei USA.

53. Jiawei USA has an ongoing, intentional relationship with its

customers, including at least CVS Pharmacy, Inc., ACE Hardware Corp., Home

Depot USA, Inc., and, Lowes Home Center, Inc., with the clear aim of inducing

their nationwide distribution and sale in the United States. Upon information and

belief, the quantity of purchase would indicate to Jiawei USA that its products

would be shipped to all of its customers retail stores, including CVS Pharmacy,

Inc., ACE Hardware Corp., Home Depot USA, Inc., and, Lowes Home Center,

Inc.s New Jersey stores, in accordance with CVS Pharmacy, Inc., ACE Hardware

Corp., Home Depot USA, Inc., and, Lowes Home Center, Inc.s customary

practice, something that is well known to Jiawei USA. Upon information and

belief, Jiawei USA follows a similar practice with its other customers having retail

stores in the United States. As such, Jiawei USA knew and intended, or was

willfully blind to the fact that its Accused Infringing Products would be imported

into the United States, and then offered for sale and sold by its customers in the

United States, including in New Jersey.

54.

Based upon the foregoing facts, and reasonable inferences therefrom,

upon information and belief, Jiawei USA has, with knowledge of Plaintiffs


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7,196,477; 7,429,827; 8,362,700; and, 8,089,370 Patents and specific intent to

infringe, and/or willful blindness to the infringement, actively induced and is

inducing infringement of Plaintiffs 7,196,477; 7,429,827; 8,362,700; and,

8,089,370 Patents by the direct infringement of its customers in the United States,

including but not limited to, CVS Pharmacy, Inc., ACE Hardware Corp., Home

Depot USA, Inc., and, Lowes Home Center, Inc., and will continue to do so unless

restrained by this Court.

Count 9Willfulness of Jiawei USAs Infringement



56. Upon information and belief, Jiawei USA has had actual knowledge

of Plaintiffs 477 and '827 Patents, and knowledge that its solar-powered garden

lights as accused of infringement of these patents earlier in this Complaint

(Accused Infringing Products) would infringe Plaintiffs 477 and '827 Patents if

imported into, offered for sale or sold in the United States. Jiawei USA is believed

to have had such knowledge long prior to the filing of Plaintiffs Original

Complaint against Jiawei USA in Case No. 13-cv-1952 and 1953 (D.N.J.).

57. As a result of Richmonds activities, Defendant is long believed to


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have knowledge of Plaintiffs 477 and 827 Patents and knowledge that one or

more of Defendants previously identified products infringe Richmonds

aforementioned patents. As a result, Defendants infringement of Plaintiffs Patent

is willful.

58. The allegations and factual contentions set forth in this Count are

likely to have evidentiary support after a reasonable opportunity for further

investigation or discovery. See Fed. R. Civ. P. 11(b)(3).

7. PLAINTIFFS DAMAGES AND IRREPARABLE HARM

59. Plaintiff has been damaged as a result of Defendants infringing

activities and will continue to be damaged unless such activities are enjoined by

this Court. Pursuant to 35 U.S.C. 284, Plaintiff is entitled to damages adequate to

compensate for the infringement of Plaintiffs Patents, including, inter alia, lost

profits and/or a reasonable royalty.

60. Plaintiff will be irreparably harmed if Defendants patent infringement

continues. Plaintiff relies upon his patents for protection of his business

intellectual property and the rampant infringement of his patents by Defendant robs

Plaintiffs business of its intellectual assets and denies Plaintiff the exclusivity in

the marketplace for offering and selling his products to which he is entitled under


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the Patent Laws. This seriously damages Plaintiff in a manner that cannot be

adequately compensated by money alone. Plaintiff is entitled to a permanent

injunction prohibiting Defendant, its directors, officers, employees, agents, parents,

subsidiaries, affiliates, and anyone else in active concert or participation with them,

from taking any other actions that would infringe Plaintiffs Patents.

8. RIGHT TO ROYALTIES FOR VIOLATION OF

PROVISIONAL RIGHTS IN THE 700 PATENT

61.

On information and belief, Defendant Jiawei USA had actual notice of

the '953 Published Application, which matured into the 700 Patent, including its

specification and claims.

62.

On information and belief, pursuant to 35 U.S.C. 154(d), since

having actual notice of the '953 Published Application, Defendant at least used the

invention as claimed in one or more claims of the '953 Published Application and

the later issued 700 Patent, by making, using, offering for sale, selling and/or

importing into the United States one or more models of solar-powered garden

lights, including the models identified in Exhibit A as infringing the 700 Patent.

63. As a result of violation of Plaintiffs provisional rights in the '953

Published Application by Defendant Jiawei USA, Plaintiff is entitled to recover a


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reasonable royalty pursuant to 35 U.S.C. 154(d)(1), in addition to Plaintiffs

other rights provided by the Patent Statute.

9. RIGHT TO ROYALTIES FOR VIOLATION OF

PROVISIONAL RIGHTS IN THE 370 Patent

64.

On information and belief, Defendant Jiawei USA had actual notice of

the '495 Published Application, which matured into the 370 Patent, including its

specification and claims.

65.

On information and belief, pursuant to 35 U.S.C. 154(d), since

having actual notice of the the '495 Published Application, Defendant at least used

the invention as claimed in one or more claims of the '495 Published Application

and the later issued 370 Patent, by making, using, offering for sale, selling and/or

importing into the United States one or more models of solar-powered garden

lights, including the models identified in Exhibit A as infringing the 370 Patent.

66.

As a result of violation of Plaintiffs provisional rights in the '495

Published Application by Defendant Jiawei USA, Plaintiff is entitled to recover a

reasonable royalty pursuant to 35 U.S.C. 154(d)(1), in addition to Plaintiffs

other rights provided by the Patent Statute.

10. JURY DEMAND


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67. Plaintiff hereby demands a trial by jury, pursuant to Fed. R. Civ. Proc.

38(b), for all issues so triable.

11. PRAYER FOR RELIEF

WHEREFORE, Plaintiff prays that the court enter judgment granting

Plaintiff the following relief:

a. Awarding Plaintiff his damages adequate to compensate for

Defendants infringement of Plaintiffs Patents, including, inter alia, lost profits

and/or a reasonable royalty;

b. Awarding treble of the damages and/or reasonable royalty on

account of the willful nature of the infringement, pursuant to 35 U.S.C. 284;

c. Declaring this case to be exceptional under 35 U.S.C. 285 and

awarding Plaintiff his attorneys' fees, costs and expenses related to bringing this

action;

d. Enjoining Defendant from infringing Plaintiffs Patents; and

e. Awarding Plaintiff such further and other relief as the Court

deems just and equitable.

Respectfully submitted,

/s/ Lawrence C. Hersh


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Lawrence C. HershAttorney at Law

17 Sylvan StreetSuite 102B

Rutherford, New Jersey 07070Tel: (201) 507-6300

Fax: (201) [email protected]

Attorneys for PlaintiffSimon Nicholas Richmond

Of Counsel

Theodore F. Shiells

Texas State Bar No. 00796087Shiells Law Firm P.C.1201 Main StreetSuite 2470

Dallas, Texas 75202

Tel: (214) 979-7312

Fax: (214) [email protected]

richmond v. jiawei technology

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